India: On The Right Path

Vikrant Rana of S S Rana & Co explains how designs are
regulated in the Indian IP system and how recent developments have
brought the country in line with the rest of the world.

Indian markets are now flooded with a large variety of Indian
and foreign products, thanks to globalisation and the
liberalisation of the Indian economy. The increase in the Indian
middle classes' purchasing power has also led to a growing
market in India and consumers are spoilt for choice when they visit
shops. Notwithstanding the reliability and quality of a product,
companies also need to make sure that the aesthetic character of
their products is continuously maintained and improved upon to
appeal to the consumer.

Today, most of the world understands the importance of
protecting IP. This is shown by improvements in IP management
systems, initiatives by governments and the rise in the number of
applications for IP protection filed by companies and
individuals.

Industrial design is one such IP that adds value to a commercial
product. Companies spend huge capital and employ professional
designers to come up with an innovative design to attract the
target masses.

Registrability

In India, the Designs Act of 2000 and the Design Rules of 2001
govern the protection of industrial designs. The design world is
huge and the applications are unlimited, so it is fortunate for the
Indian Patent Office that not all designs can be registered.

In Indian law, there are provisions to safeguard the interest of
design owners that befit the criteria of registration in this
territory.

According to the Designs Act, design registration can be
obtained for new or original features of shape, configuration,
pattern, ornamentation or composition of lines or colours as
applied to an article, whether in two or three dimensions or both,
and at the same time be capable of manufacture by industrial means
whether manually, mechanically or chemically, which in the finished
article "appeal to and are judged solely by the eye".
This implies that the design must appear and should be visible on
the finished article for which it is meant. Any design on the
inside arrangement of a box, money purse or cupboard for example,
may not be considered as showing such articles in the open state,
as those articles are generally put in the market in the closed
state.

The essence of an article of use is its appearance and design.
As well as the function of the product, its design plays a
significant role in its marketability and sales. Designs are
innovations which could either provide a solution to a problem due
to external shapes or structure and/or to make it more attractive
and aesthetic. Design refers to any creativity applied to an
article, as long as it does not denote any specific function, and
only the character that enhances or beautifies its presentation.
The character of the article concerned, apart from its use and
efficiency that appeals to the viewer or customer, is its design.
The articles onto which the designs are applied should have some
applicability other than merely carrying the design. For instance,
a drawing or painting is not the same as wallpaper or wrapping
paper or textiles.

The Act lays down the conditions for registrability of a design
seeking protection. The most basic and preliminary condition for
the eligibility for registration of a design of or on an article is
its novelty and originality. The condition that a design must be
new is assessed on whether it is found anywhere else in the world
in the form of published documents or been used in public before
the filing of the application for registration.

The design should also be significantly distinguishable from the
known designs or their combinations and should not comprise or
contain scandalous or obscene matter.

To be eligible for registration, a design has to be novel,
original, moral and reproducible. However, there are still certain
articles that may be all of these but have been excluded such as
book jackets, calendars, certificates, forms and documents, dress
making patterns, greetings cards, leaflets, maps and plan cards,
postcards, stamps and medals, labels, tokens, cards and
cartoons.

To be eligible for protection under Section 2 (d) of the Act,
the features of a design must not: include any mode or principle of
construction; be a mere mechanical device in substance; be a Trade
Mark or property mark; or be an artistic work under the Copyright
Act

According to Section 15 of the Copyright Act 1957, the copyright
in any design that is capable of being registered under the Designs
Act, but which has not been registered, shall cease as soon as any
article to which the design has been applied has been reproduced
more than 50 times by an industrial process by the owner of the
copyright.

In the last 10 years, about 46,660 applications have been filed
at the Indian Patent Office. Only about 30% of these are foreign
filings and the remaining 70% are of Indian origin. Unlike the
filing trends observed for patents, Indians appear to be more
active in applying for design registrations, though in absolute
terms the numbers are dismal. Up until 2008, the gap between Indian
and foreign filings had been narrowing, but in the past two years
it has widened due to the drop in the number of foreign filings
(Figure 1).

Over the last decade, companies from the USA, Japan, UK, France,
Germany, Italy and Switzerland among others have been largely and
consistently filing design applications in India. In terms of the
highest number of filings, leading foreign companies include
Microsoft Corporation, Koninklijke Philips Electronics, Nokia,
Colgate Palmolive, Honda Motor, Lego, DeBeers Centenary and Procter
and Gamble.

There are 39,008 designs in force in India and about 4,200
designs are registered annually. The design registration process is
simplified and if an application is in order and there are no
substantive objections by the Patent Office, then a design
registration certificate is issued within six months. This is also
corroborated by last year's report which shows that the number
of registrations granted has increased by 12% over the previous
year, indicating faster processing of design applications and their
registration (Figure 3), which was also helped by a fall in the
number of applications filed.

Of the 6,025 designs registered in India in the year 2009 to
2010, 3,552 registrations were Indian and 2,473 foreign.

Cancellation proceedings

The Indian design registration system does not provide for
opposition proceedings before the registration of a design. Once
the design is registered with the Indian Patent Office, its
validity can be objected to under Section 19 of the Act, which
covers cancellation of registration, the grounds for which are:

prior registration in India;

prior publication in India or
elsewhere before the date of priority or date of application;

the design not being new or
original;

the design not being registrable
under the Act; and

if the design does not meet the
definition under clause (d) of Section 2 of the Act.

According to the Indian Patent Office's annual reports, in
the last 10 years an average of 72 applications are filed annually
for design registration cancellations

Many court decisions pertaining to designs have been issued in
recent years, most of them related to the infringement of
registered designs. The decisions are primarily in favour of the
plaintiff with a few exceptions where the defendants have countered
the charges and sought cancellations of the registered designs.

Recent developments

The design registration system is time bound and the fastest of
all IP registration procedures. The following developments have
taken place or are likely to be introduced shortly to the Indian
design system.

The Indian Patent Office has released a manual on design
practice and procedure for proper understanding of the filing
procedure among the stakeholders. The manual is expected to make
officers and applicants aware of the correct procedure involved in
the prosecution of design applications, reducing the delay in
registration.

The complete automation of the design registration system is in
progress and the entire process will be e-enabled. The status of an
application can already be viewed online and other online retrieval
systems are available that enable the user to access full texts and
images.

E-filing of design applications will be introduced shortly and
it is gaining momentum in patents and trade marks. This is expected
to boost the number of design registration filings too. The
controller now also grants telephonic hearings and discussion of
objections to the office. Given all these developments, the Indian
Patent office now ensures a three-month turnaround time from filing
to registration.

At par with the provisions worldwide, the design protection
system in India provides the value quotient to innovators and
designers in India as well as those abroad. The improvements being
introduced to the system bring about a better processing of design
applications.

Several local and government organisations are taking
initiatives to encourage designers to exploit their IP rights and
get their designs registered to ensure that the deserving artisans,
creators and originators of designs are not deprived of their
deserved reward. The National Institute of Design (NID) is one such
organisation established by the Government of India in 1961 to
encourage research, service and training in industrial design.
Every year thousands of students are trained in disparate design
disciplines offered by NID.

The Confederation of Indian Industry (CII) in collaboration with
Department of Industrial Policy and Promotion (DIPP) and the Indian
Intellectual Property Office under the Government of India also
confer awards to several organisations, innovators and designers
for their outstanding achievements in the development of IP in
India.

Despite these initiatives to realise the full potential of
Indian designers and innovators, the rate of filing of design
applications by domestic companies has dropped from 80% to 60 % in
the last 10 years. In absolute terms, there is huge scope and space
to accommodate our national filings and promotion in this sector is
more than welcome.

Originally published by Managing Intellectual Property, IP
Focus 8th Edition.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
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The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.

Created by Kevin Systrom and Mike Krieger in 2010, Instagram is a social media platform for sharing photos and videos which has become quite popular in the recent years with teenagers and adults alike.

As part of due diligence, online platforms require vendors on their portal to provide particulars of trade mark registration or application. The Bureau of Indian Standards (BIS) also requires applicants to provide particulars of trade mark registration or application.

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